Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
This non-final office action is in response to the Application filed on 05/31/2024.
Claim(s) 1-20 are pending for examination. Claim(s) 1, 15, 20 is/are independent claim(s).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim(s) 1, 15, 20 rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Based upon consideration of all of the relevant factors with respect to the claim as a whole, claim(s) 1, 15, 20 is/are determined to be directed to a judicial exception, i.e. an abstract idea without significantly more. The rationale for this determination is explained below.
The claim(s) is/are directed toward the abstract idea of virtual bookplates. The claim(s) do/does not contain any improvement to a technology or field, nor do they contain any additional elements that are sufficient to amount to significantly more than the judicial exception because there are not sufficient limitations beyond linking the abstract idea to a computer.
In analyzing the Applicant’s claims for subject matter eligibility we use the Alice Mayo framework.
See MPEP 2106 - Patent Subject Matter Eligibility.
In step 1 we determine that the claims are a "process, machine, manufacture, or composition of matter", (claim 1 is a method, claim 15 is a system, claim 20 is a medium), so we move to step 2A.
Step 2A is a two-prong inquiry, in Prong One we determine whether a claim recites a judicial exception, and if so, then we determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception.
In step 2A, Prong One we determine that the “identifying”, and “presenting”, limitations in the claims are directed to a judicial exception, namely the abstract idea of virtual bookplates, which falls under the abstract idea grouping of methods of organizing human activity [mental processes, mathematical concepts] as described in MPEP 2106.04(a).
This moves us to Prong Two.
In step 2A, Prong Two we use the factors discussed in 2106.04(d)(I) to determine that the abstract idea is not integrated to a practical application. Specifically the claims take the abstract idea of virtual bookplates and merely include instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f).] This moves us to step 2B.
In step 2B, we determine that the “wherein the method is executed by at least one device including a hardware processor” in the claims do not recite significantly more than the judicial exception (see MPEP 2106.05(A)-(B)).
i. Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer.
iv. Generally linking the use of the judicial exception to a particular technological environment or field of use
In claims 1, 15, the Applicant performs these steps on a "system", in claims 20 the Applicant stores these steps on a “medium”, which does nothing more than link the abstract idea to a computer.
Although the applicant adds the idea of virtual bookplates to a computing device, the addition of a computing device does not add "something more" to the claims. This merely takes the abstract idea and simply adds the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f));
Therefore, the claims are rejected under 35 U.S.C. 101 because the claimed invention is directed to the abstract idea without significantly more.
Regarding dependent claims 2, 6, 10, 12, the same analysis from the independent claims applies to the dependent claims. In addition
The “overlaying the virtual bookplate” from claim 2 and “eBook’ from claim 12 are deemed to fail step 2B for: Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, (See 2106.05(d) Well-Understood, Routine, Conventional Activity, including (II) that describes what courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner).
The “determining” and “identified for displaying” from claim 6 and the recited “selected from a plurality of virtual bookplates” of claim 10 are deemed to fail step 2B as simply Adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea (see MPEP 2106.05(A)-(B))
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3, 4, 6-8, 11-13, 15, 17, 18, 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DeMello, Marco A. et al. US Pub. No. 2005/0097057 (DeMello).
Claim 1:
DeMello teaches:
A method comprising:
accessing a request for a digital content item [¶ 0032, 46] (requesting access to encrypted LIT files);
identifying a virtual bookplate associated with the digital content item [¶ 0031-32, 37, 55-56] (A Bookplate API 94 is provided which returns the purchaser's name (or other information related to the purchaser) from the cryptographically hashed Bookplate stream 14C inside the DRM Storage object 14 of each title 10 (e.g., in the case of individually sealed titles that include the purchaser's name or other identifying information in their meta-data). The string returned by this function may be used on the book cover page 100 to identify the rightful owner of the title 10; an example, in which the string is the user's name, is depicted in FIG. 2); and
presenting an interface including the virtual bookplate in association with the digital content item [¶ 0031, 38, 55-56] (Figs. 2-3, cover page with bookplate, “ex libris John Beezer”, ex libris is Latin for 'from the books' and is also known as a bookplate, a bookplate is a printed or decorative label pasted into a book to indicate ownership),
wherein the method is executed by at least one device including a hardware processor [¶ 0026-27] (a processing unit is a “hardware processor”).
Claim 3:
[Examiner’s Note: The specification discloses generating using a Generative Pretrained Image Model (“GPIM”), however the claims do not require a generative model, they simply require generating in the broadest reasonable interpretation in view of the specification which does not include a Generative Pretrained Image Model (“GPIM”)]
DeMello teaches:
The method of Claim 1, further comprising:
subsequent to accessing the request for the digital content item: generating the virtual bookplate for displaying in association with the digital content item based on a virtual bookplate configuration associated with the digital content item [¶ 0031-32, 37, 55-56] (A Bookplate API 94 is provided which returns the purchaser's name (or other information related to the purchaser) from the cryptographically hashed Bookplate stream 14C inside the DRM Storage object 14 of each title 10 (e.g., in the case of individually sealed titles that include the purchaser's name or other identifying information in their meta-data). The string returned by this function may be used on the book cover page 100 to identify the rightful owner of the title 10; an example, in which the string is the user's name, is depicted in FIG. 2) [¶ 0031, 38, 55-56] (Figs. 2-3, cover page with bookplate, “ex libris John Beezer”, ex libris is Latin for 'from the books' and is also known as a bookplate, a bookplate is a printed or decorative label pasted into a book to indicate ownership).
Claim 4:
DeMello teaches:
The method of Claim 3, further comprising:
generating the virtual bookplate configuration for the digital content item based on user input from a purchaser of the digital content item [¶ 0006, 22, 31, 37-43, 54-56] ("individually sealed" content includes in the rights-management data information pertinent to the rightful owner (e.g., the owner's name, credit card number, receipt number or transaction ID for the purchase transaction) [¶ 0027, 44, 48, 5] (user enters commands) [¶ 0031] (user click) [¶ 0038] (user taps).
Claim 6:
DeMello teaches:
The method of Claim 1, further comprising:
determining whether there is any virtual bookplate associated with the digital content item;
wherein the virtual bookplate associated with the digital content item is identified for displaying in association with the digital content item in response to determining that the virtual bookplate is associated with the digital content item [¶ 0031-32, 37, 55-56] (A Bookplate API 94 is provided which returns the purchaser's name (or other information related to the purchaser) from the cryptographically hashed Bookplate stream 14C inside the DRM Storage object 14 of each title 10 (e.g., in the case of individually sealed titles that include the purchaser's name or other identifying information in their meta-data). The string returned by this function may be used on the book cover page 100 to identify the rightful owner of the title 10; an example, in which the string is the user's name, is depicted in FIG. 2).
Claim 7:
DeMello teaches:
The method of Claim 1, further comprising:
prior to identifying the virtual bookplate:
determining that the digital content item is associated with the virtual bookplate based on a virtual bookplate configuration corresponding to the digital content item [¶ 0031-32, 37, 55-56] (A Bookplate API 94 is provided which returns the purchaser's name (or other information related to the purchaser) from the cryptographically hashed Bookplate stream 14C inside the DRM Storage object 14 of each title 10 (e.g., in the case of individually sealed titles that include the purchaser's name or other identifying information in their meta-data). The string returned by this function may be used on the book cover page 100 to identify the rightful owner of the title 10; an example, in which the string is the user's name, is depicted in FIG. 2);
requesting, by a first computing device, the virtual bookplate from a second computing device [¶ 0020, 33-34, 45-46, 50-53, 55, 69-72] (server fulfillment, send and receive from server);
receiving, by the first computing device, the virtual bookplate from the second computing device [¶ 0020, 33-34, 45-46, 50-53, 55, 69-72] (server fulfillment, send and receive from server).
Claim 8:
DeMello teaches:
The method of Claim 1, wherein:
the digital content item is owned or licensed to a particular account in association with the virtual bookplate, and
the virtual bookplate is not associated with other variations of the digital content item that are owned or licensed to other respective accounts [¶ 0031, 38, 55-56] (Figs. 2-3, cover page with bookplate, “ex libris John Beezer”, ex libris is Latin for 'from the books' and is also known as a bookplate, a bookplate is a printed or decorative label pasted into a book to indicate ownership).
Claim 11:
DeMello teaches:
The method of Claim 1, wherein:
the virtual bookplate comprises at least one interface element that includes one or more of: (a) content from a social media feed, (b) a message from a purchaser of the digital content item, or (c) an image selected by the purchaser of the digital content item [¶ 0031, 38, 55-56] (Figs. 2-3, cover page with bookplate, “ex libris John Beezer”, this could be considered a “message from a purchases”).
Claim 12:
DeMello teaches:
The method of Claim 1, wherein the digital content item is an eBook [¶ 0019-23] (eBook).
Claim 13:
DeMello teaches:
The method of Claim 1, wherein:
presenting the virtual bookplate in association with the digital content item comprises displaying text of the digital content item such that the virtual bookplate does not cover the text of the digital content item [¶ 0031, 38, 55-56] (Figs. 2-3, cover page with bookplate, “ex libris John Beezer”, the name in the case “does not cover the text” of the book).
Claims 15, 17, 18, 20:
Claim(s) 15 and 20 is/are substantially similar to claim 1 and is/are rejected using the same art and the same rationale.
Claim 1 is a “method” claim, claim 15 is a “system” claim and claim 20 is a “medium” claim, but the steps or elements of each claim are essentially the same.
Claim(s) 17 is/are substantially similar to claim 3 and is/are rejected using the same art and the same rationale.
Claim(s) 18 is/are substantially similar to claim 4 and is/are rejected using the same art and the same rationale.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 2, 5, 9, 10, 14, 16, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over DeMello, Marco A. et al. US Pub. No. 2005/0097057 (DeMello) in view of Makower; David et al. US Pub. No. 2014/0002470 (Makower).
Claim 2:
DeMello teaches all the elements as shown above.
DeMello does not appear to explicitly disclose “overlaying”.
However, the disclosure of Makower teaches:
The method of Claim 1, wherein:
presenting the virtual bookplate in association with the digital content item comprises overlaying the virtual bookplate on at least a portion of the digital content item [¶ 0052] (overlaid graphic) [¶ 0056] (overlaid translation) [¶ 0058] (title and author of the character script is overlaid).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the method of virtual bookplates in DeMello and the method of eBook covers in Makower, with a reasonable expectation of success.
The motivation for doing so would have been the use of known technique to improve similar devices (methods, or products) in the same way; (See KSR Int’l Co. v. Teleflex Inc., 550 US 398, 82 USPQ2d 1385, 1396 (U.S. 2007) and MPEP § 2143(D)).
The know technique of eBook covers in Makower could be applied to the electronic books in DeMello. Makower and DeMello are similar devices because each process electronic books. One of ordinary skill in the art would have recognized that applying the known technique would improve the similar devices and resulted in an improved system, with a reasonable expectation of success, “to improve the user experience” [Makower: ¶ 0005, 08, 28, 65].
Claim 5:
Makower teaches:
The method of Claim 1, wherein:
the virtual bookplate is temporarily overlaid on at least a portion of the digital content item in response to user input selecting a command or option associated with the digital content item [¶ 0085] (temporarily displayed) [¶ 0052] (overlaid graphic) [¶ 0056] (overlaid translation) [¶ 0058] (title and author of the character script is overlaid).
Claim 9:
Makower teaches:
The method of Claim 1, wherein:
a format of the virtual bookplate is determined based on attributes of a display of a computing device presenting the interface [¶ 0061-66] (size based on screen size).
Claim 10:
DeMello teaches:
The method of Claim 1, further comprising:
wherein the virtual bookplate is selected from a plurality of virtual bookplates associated with the digital content item [¶ 0031-32, 37, 55-56] (A Bookplate API 94 is provided which returns the purchaser's name (or other information related to the purchaser) from the cryptographically hashed Bookplate stream 14C inside the DRM Storage object 14 of each title 10 (e.g., in the case of individually sealed titles that include the purchaser's name or other identifying information in their meta-data). The string returned by this function may be used on the book cover page 100 to identify the rightful owner of the title 10; an example, in which the string is the user's name, is depicted in FIG. 2).
Makower also teaches: [¶ 0070, 77, 80, 90] (old and new cover art could be a “plurality”).
Claim 14:
Makower teaches:
The method of Claim 1, wherein:
presenting the interface including the virtual bookplate comprises displaying the digital content item and playing a first animation that overlays the virtual bookplate on at least a portion of the digital content item [¶ 0052] (overlaid graphic) [¶ 0056] (overlaid translation) [¶ 0058] (title and author of the character script is overlaid) [¶ 0060, 65-66, 70] (Fig. 7A-7C, animations).
Claims 16, 19:
Claim(s) 16 is/are substantially similar to claim 2 and is/are rejected using the same art and the same rationale.
Claim(s) 19 is/are substantially similar to claim 5 and is/are rejected using the same art and the same rationale.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Please See PTO-892: Notice of References Cited.
Evidence of the level skill of an ordinary person in the art for Claims 3-4, different ways of “generating” a bookplate:
WANG; Wenchao et al. US 20250218082 [¶ 0037] (excerpt from user) [¶ 0106] (generating the background image in the cover by using the generative model based on the excerpt information and the classification information, and the display effect of the text comprises that a name of the book or writings used for representing the excerpt information is displayed in a highlighting effect).
Lu; Yi US 20130332576 owner label of digital service content requested to be lent.
Kraft; Andreas et al. US 20080228869 digital rights management with a rights label.
Yonemoto; Andrew US 20120210269 personalized bookmark, overlay, Digital bookmark; Display of the digital engraving may relate to overlaid text or image data of the engraving on a page of the digital book.
Paperny; Dmitry et al. US 7559034 e-book; Fig. 7, overlay, figs. 8-13 animation overlay.
Citations to Prior Art
A reference to specific paragraphs, columns, pages, or figures in a cited prior art reference is not limited to preferred embodiments or any specific examples. It is well settled that a prior art reference, in its entirety, must be considered for all that it expressly teaches and fairly suggests to one having ordinary skill in the art. Stated differently, a prior art disclosure reading on a limitation of Applicant's claim cannot be ignored on the ground that other embodiments disclosed were instead cited. Therefore, the Examiner's citation to a specific portion of a single prior art reference is not intended to exclusively dictate, but rather, to demonstrate an exemplary disclosure commensurate with the specific limitations being addressed. In re Heck, 699 F.2d 1331, 1332-33,216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968". In re: Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323,75 USPQ2d 1213,1215 (Fed. Cir. 2005); In re Fritch, 972 F.2d 1260, 1264,23 USPQ2d 1780, 1782 (Fed. Cir. 1992); Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807,10 USPQ2d 1843, 1846 (Fed. Cir. 1989); In re Fracalossi, 681 F.2d 792,794 n.1, 215 USPQ 569, 570 n.1 (CCPA 1982); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976); In re Bozek, 416 F.2d 1385,1390,163 USPQ 545, 549 (CCPA 1969).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN J SMITH whose telephone number is (571)270-3825. The examiner can normally be reached Monday - Friday 11:00 - 7:30 EST.
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/Benjamin Smith/Primary Examiner, Art Unit 2172 Direct Phone: 571-270-3825
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